[Federal Register Volume 76, Number 183 (Wednesday, September 21, 2011)]
[Notices]
[Pages 58537-58539]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-24209]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-710]


 In the Matter of Certain Personal Data and Mobile Communications 
Devices and Related Software; Notice of Commission Determination To 
Review in Part a Final Initial Determination Finding a Violation of 
Section 337; Schedule for Filing Written Submissions on the Issues 
Under Review and on Remedy, the Public Interest and Bonding

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to review in part the final initial 
determination (``final ID'') issued by the presiding administrative law 
judge (``ALJ'') on July 15, 2011, finding a violation of section 337 of 
the Tariff Act of 1930, 19 U.S.C. 1337, in the above-captioned 
investigation.

FOR FURTHER INFORMATION CONTACT: Sidney A. Rosenzweig, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone (202) 708-2532. Copies of non-
confidential documents filed in connection with this investigation are 
or will be available for inspection during official business hours 
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. 
International Trade Commission, 500 E Street, SW., Washington, DC 
20436, telephone (202) 205-2000. General information concerning the 
Commission may also be obtained by accessing its Internet server at 
http://www.usitc.gov. The public record for this investigation may be 
viewed on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. Hearing-impaired persons are advised that information 
on this matter can be obtained by contacting the Commission's TDD 
terminal on (202) 205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on April 6, 2010, based on a complaint filed by Apple Inc., and its 
subsidiary NeXT Software, Inc., both of Cupertino, California 
(collectively, ``Apple''), alleging a violation of section 337 in the 
importation, sale for importation, and sale within the United States 
after importation of certain personal data and mobile communications 
devices and related software. 75 FR 17434 (Apr. 6, 2010). The complaint 
named as respondents High Tech Computer Corp. of Taiwan and its United 
States subsidiaries HTC America Inc. of Bellevue, Washington, and 
Exedia, Inc. of Houston, Texas (collectively, ``HTC'').
    Several patents that had been asserted by Apple in this 
investigation were earlier asserted by Apple in Investigation No. 337-
TA-704 against Nokia Corp. of Finland and Nokia Inc. of White Plains, 
New York (collectively, ``Nokia''). On motion by the Commission 
investigative attorney (``IA'') in the 704 investigation and by the 
respondents in both investigations, the Chief ALJ transferred Apple's 
assertion of overlapping patents against Nokia from the 704 
investigation into the 710 investigation. See Inv. No. 337-TA-704, 
Order No. 5 (Apr. 26, 2010). However, Apple and Nokia entered a 
settlement agreement, and on July 21, 2011, the Commission determined 
not to review the presiding ALJ's termination of the investigation as 
to Nokia in the 710 investigation. HTC remains.
    On July 15, 2011, the ALJ issued the final ID. By that time, the 
investigation had narrowed to certain claims of four patents: claims 1, 
3, 8, 15, and 19 of U.S. Patent No. 5,946,647 (``the '647 patent''); 
claims 1, 2, 24, and 29 of U.S. Patent No. 6,343,263 (``the '263 
patent''); claims 1, 5, and 6 of U.S. Patent No. 5,481,721 (``the '721 
patent''); and claims 1 and 7 of U.S. Patent No. 6,275,983 (``the '983 
patent''). The final ID found a violation of section 337 by HTC by 
virtue of the infringement of claims 1, 8, 15, and 19 of the '647 
patent, and claims 1, 2, 24, and 29 of the '263 patent. The ALJ 
recommended the issuance of a limited exclusion order but that no bond 
be posted during the Presidential review period. The final ID found 
that claim 3 of the '647 patent was not infringed. In addition, the 
final ID found that Apple had demonstrated neither infringement nor 
Apple's own practice (for purposes of establishing the existence of a 
domestic industry) of claims 5 and 6 of the '721 patent and claims 1 
and 7 of the '983 patent. The final ID concluded that HTC had not 
demonstrated that any of the asserted patent claims were invalid.
    On August 1, 2011, HTC, Apple, and the IA each petitioned for 
review of the final ID. HTC and the IA challenge the ALJ's finding of a 
violation of section 337 for the '647 and '263 patents. In addition, 
HTC challenged some of the final ID's findings with respect to the '721 
and '983 patents. Apple's petition challenges the ALJ's finding of no 
violation for the '721 and '983 patents. Apple does not contest the 
ALJ's determination that HTC did not infringe claim 3 of the '647 
patent. On August

[[Page 58538]]

9, 2011, the parties filed responses to the others' petitions.
    Having examined the record of this investigation, including the 
ALJ's final ID, the petitions for review, and the responses thereto, 
the Commission has determined to review the final ID in part.
    Specifically, the Commission has determined to review the following 
issues:
    For the '263 patent, the Commission has determined to review 
certain claim constructions, as well as the final ID's determinations 
of infringement, domestic industry, and validity, as set forth below:
    (1) The final ID's construction of ``realtime API'' and whether the 
accused products and Apple's domestic industry products practice this 
limitation if HTC's proposed construction were adopted. (HTC Pet. 15-
21.)
    (2) The final ID's construction of ``device handler'' and whether 
the accused products and Apple's domestic industry products practice 
this limitation if HTC's proposed construction were adopted. (HTC Pet. 
21-30.)
    (3) Whether the API of the accused products is ``coupled between'' 
two subsystems. (HTC Pet. 30-35).
    (4) Whether the final ID's applications of the claim constructions 
for ``realtime API'' and ``device handler'' are consistent in its 
analyses of infringement and validity, and whether, based on a 
consistent treatment, the asserted claims are valid and infringed, and 
whether the domestic industry requirement is satisfied. (HTC Pet. 33-
36; IA Pet. 5-13.)
    (5) Whether Apple's domestic industry products have an adapter 
subsystem for the ``device.'' (HTC Pet. 36-37).
    For the '647 patent, the Commission has determined to review the 
final ID's determinations of infringement and validity, as set forth 
below:
    (1) Whether the final ID's applications of the claim constructions 
for ``linking actions to the detected structures'' and ``linking at 
least one action to the detected structure'' are consistent in its 
analyses of infringement and validity, and whether, based on a 
consistent treatment, the asserted claims are valid (in view of the 
Perspective system and handbook) and infringed. (HTC Pet. 53-62; IA 
Pet. 15-17).
    (2) Whether the steps of method claim 15 must be performed in the 
order in which they appear in the claim, and if so, whether the accused 
products infringe claims 15 and 19. (HTC Pet. 47-50).
    (3) Whether the accused products link structures to multiple 
actions. (HTC Pet. 39-47.)
    (4) The effect, if any, of the Supreme Court's decision in Global-
Tech Appliances, Inc. v. SEB S.A., No. 10-6 (U.S. May 31, 2011), on the 
ID's finding of inducement. (Apple Response Pet. 53).
    For the '721 patent, the Commission has determined to review 
certain claim constructions, as well as the final ID's determinations 
regarding infringement, domestic industry, and validity, as set forth 
below:
    (1) The final ID's construction of the ``processing means'' terms, 
including whether the terms are to be construed under 35 U.S.C. 112 ] 
6; if 112 ] 6 does apply, whether the recited function is 
``processing''; whether the accused products and Apple's domestic 
industry products practice these limitations based upon the alternative 
constructions (i.e., (i) If the ``processing means'' terms are subject 
to Sec.  112 ] 6 and the function is ``processing,'' or (ii) if the 
``processing means'' terms are not subject to Sec.  112 ] 6); and 
whether the asserted claims are invalid in view of Bennett alone or in 
view of the combination of Bennett and Mach messages based upon such 
alternative constructions. (Apple Pet. 35-49; HTC Pet. 63-65).
    (2) The final ID's construction of ``dynamic binding'' and whether, 
if Apple's proposed construction were adopted, the accused products and 
Apple's domestic industry products practice this limitation. (Apple 
Pet. 50-54.)
    (3) Whether, based upon the final ID's construction of ``dynamic 
binding,'' the accused products and Apple's domestic industry products 
practice this limitation. (Apple Pet. 55-58.)
    For the '983 patent, the Commission has determined to review 
certain claim constructions, as well as the final ID's determinations 
regarding infringement, domestic industry, and validity, as set forth 
below:
    (1) The final ID's construction of ``loading'' to include virtual 
copying in the term ``selectively loading,'' and whether, if HTC's 
proposed construction were adopted, the accused products and Apple's 
domestic industry products practice this limitation. (HTC Pet. 83-84).
    (2) The final ID's construction of ``selectively'' to include class 
loading in the term ``selectively loading''; whether, if Apple's 
proposed construction were adopted, the accused products and Apple's 
domestic industry products practice this limitation; and whether based 
upon Apple's proposed construction the asserted claims are invalid in 
view of NeXTSTEP Release 3, or in view of Vernon and Gautron. (Apple 
Pet. 4-11; HTC Pet. 86-87).
    (3) Whether the accused products and the Apple domestic industry 
products practice the claim limitations that call for ``executable 
program memory.'' (Apple Pet. 20-34).
    (4) Whether the ALJ acted properly in striking portions of HTC's 
expert's report regarding whether the Actor User Manual anticipates 
claim 7 of the '983 patent. (HTC Pet. 82-83).
    By determining to review these enumerated issues, the Commission is 
not excusing any party's noncompliance with Commission rules and the 
ALJ's procedural requirements, including requirements to present issues 
in pre-hearing and post-hearing submissions. See, e.g., Order No. 2 
(Apr. 5, 2010) (ground rules). The Commission may, for example, decline 
to disturb certain findings in the final ID upon finding that issue was 
not presented in a timely manner to the ALJ.
    The Commission has determined not to review the remainder of the 
final ID.
    In connection with this determination not to review the remainder 
of the final ID, the Commission rejects HTC's attempt to 
``incorporate[] by * * * reference in their entirety all of the 
arguments * * * with respect to all issues decided adversely to HTC's 
positions'' from the thousands of pages of briefing before the ALJ, 
``pre-hearing motions in limine and other evidentiary submissions, 
hearing transcripts, and hearing exhibits.'' HTC Pet. 6. Commission 
Rule 210.43(b)(1) states as follows: ``The petition for review must set 
forth a concise statement of the facts material to the consideration of 
the stated issues, and must present a concise argument providing the 
reasons that review by the Commission is necessary or appropriate to 
resolve an important issue of fact, law or policy.'' 19 CFR 
210.43(b)(1). HTC's purported incorporation does not satisfy section 
210.43(b)(1), frustrates any meaningful opposition by the other 
parties, see, e.g., Apple Response Pet. 54 n.32, and makes Commission 
review of the purportedly incorporated matter impossible. Accordingly, 
such issues are ``deemed to have been abandoned'' by HTC ``and may be 
disregarded by the Commission in reviewing'' the final ID. 19 CFR 
210.43(b)(2). Similarly, HTC's single-sentence recitals of issues 
proposed for review--such as ``HTC likewise demonstrated that claims 5 
and 6 are invalid in light of multiple different combinations, 
including (1) Bennett in view of ANSA, (2) Bennett in view of Nelson, 
and (3) Bennett in view of the common sense of a person of ordinary

[[Page 58539]]

skill, as described in KSR,'' HTC Pet. 65--do not constitute a 
``concise argument'' as required by Commission rules and omit the 
requisite ``concise statement of the facts material to the 
consideration'' of the issue. 19 CFR 210.43(b)(1). Such issues are 
deemed to have been abandoned as well.
    The parties are invited to brief their positions on the issues 
under review enumerated above with reference to the applicable law and 
evidentiary record. In particular, the parties are requested to respond 
to the following questions:
    (a) For the '263 patent, if the Commission were to find 
inconsistency between the ALJ's infringement and validity analyses, 
should the claim constructions for ``realtime API'' and/or ``device 
handler program'' be narrowed in accordance with the ID's analysis of 
validity? If a party answers this question ``yes,'' it is to identify 
where in the record (including in its petition for review) it made and 
preserved such contentions, and should explain in detail whether such 
narrowing of the scope of the asserted patent claims would result in a 
finding of noninfringement for any of the accused products.
    (b) For the '647 patent, whether the Supreme Court's decision in 
Global-Tech Appliances, Inc. v. SEB S.A., No. 10-6 (U.S. May 31, 2011) 
has any effect on the ALJ's inducement finding. If a party answers this 
question ``yes,'' it is to identify where in the record it made and 
preserved its arguments affected by Global-Tech.
    (c) For the '647 patent, whether claim 15's ``enabling selection of 
the structure and a linked action'' (as opposed to the unclaimed step 
of ``selection of the structure and a linked action'' by the user) is a 
single step, and whether HTC made and preserved the argument that it is 
a single step.
    (d) For the '721 patent, whether the ALJ's construction of the 
``processor means'' has the effect of impermissibly transforming a 
method claim into an apparatus claim.
    (e) For the '983 patent, whether any aspects of the parent 
applications' file histories are pertinent to the issues under review. 
If a party makes any such contentions, it is to identify where in the 
record it made and preserved such a position.
    In connection with the final disposition of this investigation, the 
Commission may (1) Issue an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
issue one or more cease and desist orders that could result in the 
respondent(s) being required to cease and desist from engaging in 
unfair acts in the importation and sale of such articles. Accordingly, 
the Commission is interested in receiving written submissions that 
address the form of remedy, if any, that should be ordered. If a party 
seeks exclusion of an article from entry into the United States for 
purposes other than entry for consumption, the party should so indicate 
and provide information establishing that activities involving other 
types of entry either are adversely affecting it or likely to do so. 
For background, see In the Matter of Certain Devices for Connecting 
Computers via Telephone Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843 
(December 1994) (Commission Opinion).
    If the Commission contemplates some form of remedy, it must 
consider the effects of that remedy upon the public interest. The 
factors the Commission will consider include the effect that an 
exclusion order and/or cease and desist orders would have on (1) The 
public health and welfare, (2) competitive conditions in the U.S. 
economy, (3) U.S. production of articles that are like or directly 
competitive with those that are subject to investigation, and (4) U.S. 
consumers. The Commission is therefore interested in receiving written 
submissions that address the aforementioned public interest factors in 
the context of this investigation.
    If the Commission orders some form of remedy, the U.S. Trade 
Representative, as delegated by the President, has 60 days to approve 
or disapprove the Commission's action. See Presidential Memorandum of 
July 21, 2005, 70 FR. 43251 (July 26, 2005). During this period, the 
subject articles would be entitled to enter the United States under 
bond, in an amount determined by the Commission. The Commission is 
therefore interested in receiving submissions concerning the amount of 
the bond that should be imposed if a remedy is ordered.
    Written Submissions: The parties to the investigation are requested 
to file written submissions as set forth above. Parties to the 
investigation, interested government agencies, and any other interested 
parties are encouraged to file written submissions on the issues of 
remedy, the public interest, and bonding. Such submissions should 
address the recommended determination by the ALJ on remedy and bonding. 
Complainant and the IA are also requested to submit proposed remedial 
orders for the Commission's consideration. Complainant is also 
requested to state the dates that the patents expire and the HTSUS 
numbers under which the accused products are imported. The written 
submissions and proposed remedial orders must be filed no later than 
close of business on Thursday, October 6, 2011. Reply submissions must 
be filed no later than the close of business on Monday, October 17, 
2011. No further submissions on these issues will be permitted unless 
otherwise ordered by the Commission.
    Persons filing written submissions must file the original document 
and 12 true copies thereof on or before the deadlines stated above with 
the Office of the Secretary. Any person desiring to submit a document 
to the Commission in confidence must request confidential treatment 
unless the information has already been granted such treatment during 
the proceedings. All such requests should be directed to the Secretary 
of the Commission and must include a full statement of the reasons why 
the Commission should grant such treatment. See 19 CFR 210.6. Documents 
for which confidential treatment by the Commission is sought will be 
treated accordingly. All nonconfidential written submissions will be 
available for public inspection at the Office of the Secretary.
    The authority for the Commission's determination is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in sections 210.42-46 and 210.50 of the Commission's Rules of Practice 
and Procedure (19 CFR 210.42-46 and 210.50).


    By order of the Commission.
James R. Holbein,
Secretary to the Commission.
[FR Doc. 2011-24209 Filed 9-20-11; 8:45 am]
BILLING CODE 7020-02-P